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Pinweel v. Pinwheel (S.D.N.Y.) (Order Granting Request for Prelim. Injunction)

Pinweel v. Pinwheel (S.D.N.Y.) (Order Granting Request for Prelim. Injunction)

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Published by: Venkat Balasubramani on Jul 25, 2012
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07/10/2013

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK
_____________________No. 12 Civ. 4859 (RJS)_____________________
R
ICHARD
B
ULMAN AND
P
INWEEL
,
 
I
NC
.
,Plaintiffs,
VERSUS
2BKC
O
,
 
I
NC
.
,Defendant.__________________
MEMORANDUM AND ORDERJuly 20, 2012
 __________________R
ICHARD
J.
 
S
ULLIVAN
, District Judge:Plaintiffs Richard Bulman and Pinweel,Inc. bring this action against Defendant2BKCO, Inc., asserting claims for trademark infringement, false designation of origin,unfair competition, dilution, and adeclaratory judgment. Now before theCourt is Plaintiffs’ motion for a preliminaryinjunction in connection with Plaintiffs’word mark “Pinweel” and correspondinglogo. For the reasons that follow, the Courtgrants Plaintiffs’ motion.I. B
ACKGROUND
1
 Plaintiffs Richard Bulman (“Bulman”)and Pinweel, Inc. (“Pinweel”) are the owner
1
The following facts are taken from the Complaint,the parties’ memoranda of law, declarations, andexhibits attached thereto.
and authorized user, respectively, of theword mark “PINWEEL” and a related multi-colored pinwheel logo (collectively, the“Pinweel Marks”), used in connection with agroup photo-sharing and social networkingmobile-phone application, or “app,” whichis software designed to be used on mobilephones. (Compl. 2.) Plaintiffs’ app allowsusers to upload photos, view albums, postcomments, and share content with otherusers, and is available for download via theiTunes App Store. (
 Id.
¶¶ 16-17.) Bulmanbegan developing Pinweel in 2008. (
 Id.
10.) Soon thereafter, he purchased thedomain www.pinweel.com andcorresponded with venture capitalists in thehope of securing early-stage capital for thebusiness. (
 Id.
 ¶ 11.) On March 12, 2011,Bulman filed an intent-to-use applicationwith the United States Patent and Trademark 
Case 1:12-cv-04859-RJS Document 37 Filed 07/23/12 Page 1 of 12
 
 2Office (“USPTO”) for the Pinweel wordmark, and the USPTO issued a certificate of registration for the word mark on June 12,2012. (
 Id.
¶ 14; Decl. of Richard Bulman,dated June 20, 2012, Doc. No. 10 (“BulmanDecl.”), Ex. 4.)Throughout 2011, Plaintiffs made anddistributed promotional materials with thePinweel marks and continued to test thePinweel app with limited audiences inpreparation for launching the app to thepublic through the iTunes App Store. (
 Id.
¶¶15, 16.) On November 3, 2011, Appleapproved the Pinweel iPhone app for releasein the iTunes App Store and the Pinweel appbecame available for download by the publicon November 17, 2011. (
 Id.
¶¶ 16, 17.)Defendant 2BKCo, Inc. (“Defendant”) isthe owner of the website calledPINWHEEL, located atwww.pinwheel.com. (
 Id.
21.) Pinwheelwas started by Caterina Fake (“Fake”), whois well-known in the tech start-up world as aco-founder of Flickr, a web-based photo-sharing company, and Hunch, arecommendation service. (
 Id.
) Defendantcharacterizes Pinwheel as a “map-basednotes program accessible via the internet,where members leave public or privatemessages tied to locations around the worldusing pinwheel.com’s unique world mapuser interface.” (Def. Br. at 3.)Pinwheel.com allows members to uploadphotos, and Fake has described Pinwheel as“Flickr for places.” (Compl. ¶ 23; Def. Br.at 12.) Pinwheel announced its product tothe public and launched its services in“private beta” on February 16, 2012.(Compl. ¶ 22.) Prior to the February 16,2012 beta launch announcement, Defendantidentified its new service by the name“Knotes.” (
 Id.
24.) However, at somepoint in the weeks leading up to the publicannouncement, Defendant acquired thedomain name www.pinwheel.com andchanged the name of the new service to“Pinwheel.” (
 Id.
¶¶ 24-25.)On February 18, 2012 – two days afterPinwheel’s public announcement – Plaintiffssent a cease-and-desist letter to Defendantand Fake regarding the launch of Pinwheeland the use of the Pinwheel mark, requestingthat Defendant “immediately cease from anyuse [it was] currently making of the mark PINWHEEL and abandon any intention [ithad] to use such mark in connection with[its] current business concept.” (
 Id.
¶ 27;Bulman Decl., Ex. 20.) Although the partiesinitially attempted to resolve the dispute outof court, these discussions apparently falterdand no understanding between the partieswas reached. (Compl. ¶ 30.)Several instances of confusion betweenthe parties’ products followed the launch of Pinwheel. News articles covering thelaunch of Pinwheel highlighted potentialconfusion in the marketplace, given theexistence of Pinweel.
2
(
 Id.
¶¶ 31-32.)Journalists attempted to contact Fake byemailing the Pinweel website, and at leastone venture capitalist seeking to invest inPinwheel confused the two products andparties, and contacted Pinweel by mistake.(
 Id.
¶¶ 35, 33-34.) Additionally, severalPinwheel customers have downloaded thePinweel app from the iTunes App Store,thinking that it was connected toDefendant’s service – which does not yethave a corresponding app – and becameconfused, and in some cases angry, whentheir Pinwheel login information did not
2
Defendant claims that Plaintiffs emailed reportersthemselves, “incorrectly claiming pinwheel.com wasalso a photo-sharing website.” (Def. Br. at 5; Decl.of Caterina Fake, dated June 28, 2012, Doc. No. 19(“Fake Decl.”), ¶¶ 19-20.) Plaintiffs dispute thisallegation.
Case 1:12-cv-04859-RJS Document 37 Filed 07/23/12 Page 2 of 12
 
 3work with Plaintiffs’ Pinweel app. (
See id.
36-37.)
3
 Defendant is currently expanding its userbase, which already has tens of thousands of users, and has announced that it hireddevelopers to create iPhone and Androidapps. (
 Id.
39.) Plaintiffs bring this motionfor a preliminary injunction because they areconcerned that “the recent expansion of theuser base of Fake’s Pinwheel service,together with the imminent release of [Pinwheel’s] iPhone and Androidapplications are causing and will continue tocause plaintiffs irreparable harm.” (Pl. Br.at 17-18.)II. L
EGAL
S
TANDARD
 A preliminary injunction is an“extraordinary remedy.”
Winter v. Natural Res. Def. Council
, 555 U.S. 7, 24 (2008).“A plaintiff seeking a preliminary injunctionmust establish that he is likely to succeed onthe merits, that he is likely to sufferirreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that aninjunction is in the public interest.”
 Id.
at20;
accord Salinger v. Colting
, 607 F.3d 68,79-80 (2d Cir. 2010). The party seeking theinjunction carries the burden of persuasionto demonstrate “by a clear showing” that thenecessary elements are satisfied.
See Mazurek v. Armstrong
, 520 U.S. 968, 972(1997).
3
Plaintiffs highlight a Twitter “conversation”between one such customer and Defendant, in whichthe confused customer had downloaded Plaintiffs’Pinweel app and contacted Defendant Pinwheel viaTwitter when he could not log in with his Pinwheelinformation. (Compl. 37.) When he noticed thedifferent spelling, he tweeted, “That’s not wheel itsweel; these guys are ripping you off.” (
 Id.
) Howeverin a subsequent post, the customer stated, “Readingabout it they were first! you need to sort that out itsvery confusing.” (
 Id.
)
III. D
ISCUSSION
 Plaintiffs have asserted claims for (1)trademark infringement of the PinweelMarks under Section 43(a) of the LanhamAct; (2) trademark infringement of theregistered PINWEEL mark under Section32(1)(a) of the Lanham Act; (3) adeclaratory judgment that Defendant’s useand imminent and intended use of thePinwheel word mark and/or relatedPinwheel logo would constituteinfringement of Plaintiffs’ rights underSections 43(a) and/or 32(1)(a) of theLanham Act; (4) common law trademark infringement and unfair competition; and (5)dilution under New York law, N.Y.G.B.L. §360-L. Defendant insists that Plaintiffscannot satisfy the necessary elements toobtain a preliminary injunction, focusing onPlaintiffs’ purported failure to demonstratelikelihood of success on the merits andirreparable harm.A. Likelihood of Success on the Merits
4
 Section 43(a) of the Lanham Actprovides a right of action against “[a]nyperson who, on or in connection with anygoods or services, uses in commerce anyword, term, name, symbol, or device” that“is likely to cause confusion . . . as to theorigin, sponsorship, or approval of his or hergoods, services, or commercial activities byanother person.” 15 U.S.C. § 1125(a)(1);
 New York City Triathlon LLC v. NYC Triathlon Club, Inc.
, 704 F. Supp. 2d 305,313 (S.D.N.Y. 2010). Section 43(a) protectsboth registered and unregistered marks.
 New York City Triathlon
, 704 F. Supp. 2d at314 n.1. To state a claim for trademark infringement under Section 43(a), a plaintiff must show that (1) it has a valid mark 
4
The Court focuses on Plaintiffs’ claim underSection 43(a) of the Lanham Act with regard tolikelihood of success on the merits.
Case 1:12-cv-04859-RJS Document 37 Filed 07/23/12 Page 3 of 12

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